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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CLM/BBDO v. Tropic Telecom
Case No. D2000-1266
1. The Parties
Complainant is CLM/BBDO, 2 allйe des Moulineaux, 92441 Issy-les-Moulineaux, Cedex (FRANCE).
Respondent is Tropic Telecom, P.O. Box 584, Herzelyia, Is 46105 (ISRAEL).
2. The Domain Name and Registrar
The domain name at issue is "clmbbdo.com" [hereinafter referred to as the Domain Name].
The registrar of the domain name is Abacus America, Inc. 5266 Eastgate Mall, San Diego, CA 92121 (UNITED STATES OF AMERICA) [hereinafter referred to as the Registrar].
3. Procedural History
On September 26th 2000, Complainant filed a complaint with the WIPO Arbitration and Mediation Center [hereinafter referred to as the Center]. The Complaint was received by email and in hard copy on the same day.
On September 29th 2000, the Center informed the Registrar that the Complaint had been submitted to the Center regarding the Domain Name and requested verification.
On October 18th 2000, the Registrar provided the Center with its verification response containing the full contact details available in its WHOIS database for the Domain Name registrant and confirming that:
- a copy of the Complaint was sent to it by the Complainant;
- it is the current registrar of the Domain Name registration;
- the Respondent is the current registrant of the Domain Name registration;
- the Uniform Domain Name Dispute Resolution Policy [hereinafter referred to as the ICANN Policy] applies to the Domain Name.
The Center proceeded to verify that the complaint satisfied the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy [hereinafter referred to as the ICANN Rules and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [hereinafter referred to as the WIPO Rules], including the payment of the requisite fees. The verification of compliance with the formal requirements was made on October 30th 2000.
On October 30th 2000, the Center notified the Complainant of a deficiency in its Complaint, with respect to paragraph 11(a) of the ICANN Rules. On November 6th 2000, the Complainant addressed the deficiency by providing the Center with an English version of its Complaint.
The Panel has reviewed the documentary evidence provided by the Complainant and the Center and agrees with the Center’s assessment that the Complaint now complies with the formal requirements of the ICANN Rules and the WIPO Rules.
On November 12th 2000, the Center informed the Respondent of the commencement of the proceedings as of November 12th 2000, and of the necessity of responding to the Complaint within 20 calendar days, the last day for sending a response to the Center being on December 4th 2000.
In a letter dated December 5th 2000, the Center informed the Respondent that it was in default pursuant to the ICANN Policy and the WIPO Rules and that an administrative panel would be appointed based on the number of panelists designated by the Complainant.
On December 20th 2000, the Center issued a Notification of the Appointment of Administrative Panel and of the projected decision date to the parties.
The Panel believes it was constituted in compliance with the ICANN Rules and the WIPO Rules and has also issued a Statement of Acceptance and Declaration of Impartiality and Independence dated December 14th 2000.
The Panel has received no further submissions from either party since its formation.
On December 20th 2000, the Panel requested a two-day extension to render its decision. On December 21st 2000, the Center confirmed that the new scheduled date for the decision is January 5th 2001. The Panel is consequently obliged to issue a decision on or prior to January 5th 2001, in the English language.
4. Factual Background
The Panel finds that the following facts appear from the Complaint and documents submitted with the Complaint.
Complainant is an advertising consulting agency in France in existence since 1979, as shown by annex 1 of the Complaint.
On May 12th 1998, Complainant registered the trademark CLM/BBDO in France for a term of 10 years, as shown by annex 3 of the Complaint.
Complainant registered the domain names "clm-bbdo.fr" and "clm-bbdo.com", as shown by annexes 9 and 10 of the Complaint.
On March 27th 2000, Respondent registered the Domain Name "clmbbdo.com", as shown by annex 2 of the Complaint.
On May 31st 2000, the legal council for the Complainant sent notification to the Respondent by registered mail with acknowledgement of receipt, requesting that Respondent cancel its registration of the Domain Name, or that it transfers the Domain Name to the Complainant. The notification was received by the Respondent. These findings are supported by annex 4 of the Complaint.
5. Parties’ Contentions
Complainant alleges that the domain name "clmbbdo.com" is identical to the trademark CLM/BBDO as well as to the business name of the Complainant and that the risk of confusion is consequently indisputable.
Complainant alleges that there is no phonetic association between the Domain Name and Respondent's name. Complainant suggests that the Domain Name was registered solely to profit from Complainant's trademark and to cause prejudice to it.
Complainant alleges that Respondent has no legitimate interest with respect to the Domain Name.
Complainant alleges that prior to the notification it sent to Respondent, Respondent wasn't making any use of the Domain Name, but that following the reception of the notification, the Domain Name lead to a pornographic site. Complainant adds that the site was in fact an empty portal, containing a few pornographic images, linking the user towards other pornographic sites.
Complainant also mentions that the keywords comprised in the source code to describe the site didn't have any sexual connotations. Complainant infers from that fact that the site was not intended to be identified by search engines as a pornographic site and that Respondent therefore only registered the domain name in order to cause prejudice to Complainant, which would constitute bad faith.
Complainant alleges that the fact that Respondent gave only a post office box as its address indicates that Respondent is acting under secrecy and in bad faith.
Complainant alleges that the use of the Domain Name in association with a pornographic site causes considerable prejudice to it, especially since it registered domain names "clm-bbdo.com" and "clm-bbdo.fr".
As previously stated, Respondent hasn't filed a response in the current administrative proceedings, and is in default to do so. Pursuant to s.5(e) and 14 of ICANN Rules, the Panel shall decide the dispute based upon the complaint.
6. Discussion and Findings
Pursuant to the ICANN Policy, the Complainant must convince the Panel of three elements if it wishes to have the Domain Names transferred. It is incumbent on the Complainant to show:
i) that the Domain Name is identical or confusingly similar to a trademark in which it holds rights and
ii) that the Respondent has no legitimate rights or interests in the Domain Name and
iii) that the Domain Name was registered and used in bad faith.
These three elements are considered below.
A. Confusing Similarity between the Domain Name and Complainant's trademark
The Panel is of the opinion that the trademark registration submitted by Complainant (see annex 3 of the Complaint) demonstrates Complainant's rights in the trademark "CLM/BBDO".
The Panel is also of the opinion that the Domain Name "clmbbdo.com" is confusingly similar to Complainant's trademark, considering that:
(i) the only difference between the Domain Name and Complainant's trademark is the omission of the slash between the groups of letters CLM and BBDO.
(ii) complainant registered the domain names "clm-bbdo.fr" and "clm-bbdo.com"
(iii) the likelyhood of two unrelated persons using the letters C L M B B D O as an acronym for two unrelated purposes is very low.
Therefore, the Panel finds that Complainant has shown that the Domain Name is identical or confusingly similar to a trademark in which it holds rights.
B. Right or Legitimate Interest in the Domain Name by Respondent
Given the acronymic nature of the Domain Name registered, the Panel finds the lack of phonectic association between the Domain Name and Respondent's business name as relevant to determine whether Respondent has a right or a legitimate interest in the Domain Name. Obviously, the situation would have been different with other types of name such as generic or descriptive names.
In this case, the sequence of letters CLMBBDO, constituted of 6 consecutive consonants and only one vowel at the end, without any context, does not convey any particular meaning, and is not even pronounceable as a word that could have been invented. Therefore, the most plausible reason for which someone could have a right or a legitimate interest in such name would be to use it as an abbreviation related to an organization or an entity with a corresponding name. In this case, since the Domain Name cannot be regarded as such in relation with Respondent's business name, the Panel finds that Complainant has shown that it is more likely than not that Respondent has no right or legitimate interest in the Domain Name.
In addition, a seven-letter acronym, especially when the only way to pronounce it is by spelling it, is much more uncommon and distinctive than the typical three or four-letter acronyms that are often used to identify certain organizations. The Panel is of the opinion that the length of the acronym in this case makes it even less likely that two persons could select the same one to designate two unrelated businesses. In absence of any valid justification submitted by Respondent, the Panel concludes that Respondent does not have any right or legitimate interest in the Domain Name.
C. Bad faith in Registration and Use of the Domain Name by the Respondent
Article 4(b) of the ICANN policy enumerates four sets of circumstances that, if found to be present, constitute evidence of the registration and use of a Domain Name in bad faith. In its Complaint, the Complainant has not explicitly referred to those sets of circumstances. However, this is not required since the list of circumstances provided in the ICANN Policy is not exhaustive.
As previously stated, the Domain Name was registered on March 27th 2000, about two years after Complainant registered its trademark. Section 2 of the ICANN Policy provides that, when someone registers a domain name, he represents and warrants to the registrar, notably, that, to his knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party. The same section also provides that it is incumbent on the person who registers the domain name to determine whether the domain name registration infringes or violates someone else's rights.
In the present case, the Panel finds that, since Complainant's trademark is quite unique, even considering its acronymic nature, it is very unlikely that, when Respondent registered the Domain Name, it wasn't aware that it was infringing on Complainant's trademark rights. In the opinion of the Panel, such circumstances constitute evidence of bad faith in the course of registration.
With respect to the use of the Domain Name in bad faith, Complainant alleged that a pornographic site -- without any description or keywords meta tags embedded into its html syntax -- was established soon after Complainant notified the Respondent about its request to cancel registration of the Domain Name or to transfer it to Complainant.
First of all, the Panel would like to point out how well-documented those assertions were. Complainant's notification sent to the Respondent was delivered by registered mail with acknowledgement of receipt. This allow the Panel to conclude with reasonable certainty that the notification was properly sent and that it was actually received, as shown by annex 4 of the Complaint. As for the pornographic site, its existence was not only supported by a screen capture dated July 19th, but also by a statement of a bailiff dated July 20th, 2000, as shown by annexes 5 and 6 of the Complaint.
The Panel notes a discrepancy between the screen capture made on July 19th and what the bailiff described in his statement. In the first case, the Domain Name is used to host a pornographic portal, and in the second case, the Domain Name is used to redirect people to another domain name hosting a pornographic site, namely "foufounes.com". This discrepancy in itself doesn't prevent the Panel from finding that the Domain Name did lead to a pornographic site after Complainant's notification was sent to Respondent. This finding can be made despite the fact that the Domain Name does not currently lead to any website, mainly because Complainant took great care in constituting its evidence.
What conclusions can be drawn from those findings? Taking into account the distinctiveness of Complainant's trademark and the fact that the Respondent is found to have used the Domain Name (which has been previously found to be confusingly similar to Complainant's trademark) in association with a pornographic site, suffice to conclude that Respondent's use of the Domain Name was in bad faith.
The Panel thus concludes that the Domain Name has been registered and is being used by the Respondent in bad faith.
For the foregoing reasons, the Panel concludes that:
- the Domain Name registered by the Respondent is confusingly similar to the trademark to which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the Domain Name;
- the Domain Name has been registered and is being used by the Respondent in bad faith.
Pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel requires that the domain name "clmbbdo.com" be transferred to the Complainant.
Hugues G. Richard
Dated: January 5, 2001